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Malaysia – Patent Direct and Indirect Infringement

Direct infringement of a patent claim is briefly defined as an act of infringement of all claim elements of that claim by a single entity. For instance, direct infringement of a method or process claim occurs when a single entity performs all steps of the said method or process claim, whereas direct infringement of an apparatus or product claim occurs when all claim elements are part of a single product produced by a single entity.

Under the Malaysian Patents Act, direct infringement is clearly defined for both a method or process claim and an apparatus or product claim. For a method or process claim, direct infringement in Malaysia is where every step in a particular independent claim has to be fulfilled if there is to be direct infringement. For a dependent claim, every step in the said dependent claim and the corresponding independent claim has to be fulfilled if there is to be direct infringement. For an apparatus or product claim, direct infringement in Malaysia is where every element in a particular independent claim has to be fulfilled if there is to be direct infringement. For a dependent claim, every element in the said dependent claim and the corresponding independent claim has to be fulfilled if there is to be direct infringement.

Care should be taken when patent claims are being drafted such that the said claims would be useful for direct infringement in Malaysia. To draft claims that will be useful for direct infringement in Malaysia, independent claims should be drafted such that each independent claim comprises fewer elements or steps involved in a particular subject-matter invention. Corresponding dependents claims will have to be drafted to cover various embodiments of the said subject-matter invention. However, it has to be noted that if fewer elements or steps per claim are drafted, care has to be taken to see that there is unity of invention and the requirements for patentability, i.e. novelty, inventiveness and industrial applicability are met.

In the event that an apparatus or product claim is directed towards two components, a single entity would not be liable for direct infringement, should the said entity produce both components individually, i.e. as separate units. For an apparatus or product claim, if none of the individual components in themselves are within the scope of the said claim, direct infringement is not possible as each component has to be compared against the said claim to determine whether there is infringement. However, in the event that the said single entity assembles both components, i.e. the separate units to form a single apparatus or product, then imports, offers for sale, sells or uses or stocks for those purposes, the components as one complete apparatus or product, the said single entity is now liable for direct infringement.

In the case of method or process claims, it is not necessary for all the steps of the claim to be performed in the same country or jurisdiction for there to be direct infringement as the Malaysian Patents Act provides that a product obtained directly by means of the process (product-by-the-process or method) constitutes direct infringement. Therefore, even if part of the process, (i.e. some of the steps) are performed in another country or jurisdiction, there will be direct infringement if the said product is “imported, offered for sale, sold or used or stocked for those purposes” in Malaysia.

With regards to indirect infringement, this principle is available in the United Kingdom by virtue of section 60 (2) of the 1977 Act that states “without the consent of the proprietor, a person supplies or offers to supply in the UK, a person other than the licensee or other person entitled to work the invention with any of the means relating to an essential element of the invention for putting the invention into effect when he knows or it is obvious to a reasonable person in the circumstances that those means are suitable for putting and are intended to put the invention into the UK”.

However, there is no such provision available in Malaysia with regards to indirect infringement. In Malaysia, infringement with regards to a patent that has been granted for a product pertains to making, importing, offering for sale, selling or using or stocking for the purpose of offering for sale, selling or using the product and infringement with regards to a patent that has been granted for a process pertains to using the process or making, importing, offering for sale, selling or using a product obtained directly by means of the process (product-by-the-process or method).

However, there is a provision for imminent infringement, whereby the Malaysian Patents Act allows an owner of a patent the same right against any entity that has performed acts which make it likely that a direct infringement will occur. It should be noted that proceedings in relation to imminent infringement may not be instituted after five years from the act of infringement. Similar to direct infringement, the patent owner is entitled to be granted an injunction if the patent owner successfully proves imminent infringement.

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